WIPO Committee Actively Drafting Treaty On Designs; Technical Assistance Up Next

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The work on a potential new treaty on industrial designs law and practice is on full throttle at the World Intellectual Property Organization with delegates trying to agree on common rules and procedures. The new treaty is expected to make life easier for the millions of industrial designs applicants worldwide.

The Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) is meeting from 10-14 December with a unique focus on advancing work the potential new instrument, in particular on the draft articles and draft rules.

The draft agenda was modified on the first day, when the Development Agenda Group of countries (DAG) requested that discussion on a study presented at the last session of the SCT be added to the agenda [pdf].

The Study [pdf] on the Potential Impact of the Work of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) on Industrial Design Law and Practice was prepared by the WIPO secretariat with the involvement of WIPO Chief Economist Carsten Fink. The study had originally been requested by developing countries with the aim of evaluating potential consequences of the future treaty on industrial designs on low- and middle-income economies, as well as least-developed countries (LDCs).

At the last meeting of the committee, developing countries said further work was needed on the study while developed countries deemed that no such work was necessary. The plenary could not agree on either option, and the WIPO General Assembly in October did not mention the study in its recommendations to the SCT.

Drafting work kept delegates busy for the first three days of the meeting, and discussions on draft articles and draft regulations are supposed to come to a close tomorrow (13 December), when member states are expected to discuss technical assistance, capacity building and the study on the impact of the work of the SCT.

The exercise is difficult, as most countries already have legislation covering industrial designs, and harmonising the different systems would in some cases require amending those national legislations. Committee Chair Imre Gonda of the Hungarian Intellectual Property Office reminded the plenary that the treaty was not meant to accommodate all national legislation but to create convergence for the benefit of users. He also said the instrument does not cover substantial issues, but only formalities.

A number of drafting proposals were issued by countries, among which were several proposals by Canada [pdf] (on division of application, grace period for filing in case of disclosure, representation of designs), a proposal from India [pdf] (division of application), a proposal by Chile [pdf] (request for recording of a licence or a security interest), a joint proposal [pdf] from Canada and the United States (new article and rule on restoration of priority rights, and a non-paper [pdf] by the chair (details concerning the application).

Those proposals refer to several areas of the draft articles and draft regulations, notably the representation of the industrial designs, and whether this representation might include matter that does not form part of the claimed design, and if this matter should be shown by dotted or broken lines (Regulation 3.2 – Details concerning representation of the industrial design).

Another area which prompted proposals was the division of application in the case where an office receives an application containing several industrial designs. The question is whether the office, under the new treaty, would have an obligation to provide the possibility to the applicant to amend or divide and re-submit his/her application, or if this would be optional.

A further question was to know whether the applicant could keep the filing date of his/her first application (Article 8 – Division of applications). India and Canada each issued a textual proposal on the matter. Multiple designs in one application is not currently possible in India, said the delegate.

The WIPO secretariat is expected to take all comments and proposals into account in drafting a new version of the draft articles and regulations for the next session of the SCT.

Developing Countries Engaged, Still Careful

A number of developing countries, in particular India, China and some Latin American countries, have been actively discussing the drafting of the articles and regulations. The Development Agenda Group said from the outset of the meeting that they support the drafting exercise, and that the work of the SCT should be guided by the recommendations of the WIPO Development Agenda.

On Monday, Brazil, in an opening statement [doc] on behalf of the DAG, said although the DAG is supportive of the drafting exercise this week, it recalled that member states “started discussing the issue without a clear negotiating mandate. In just a few sessions of this committee, what was meant to be a debate turned into a new norm-setting activity.”

Recalling that at the last session of the SCT, the chair concluded that “SCT was not in agreement on a recommendation to the WIPO General Assembly concerning the convening of a diplomatic conference,” the delegate said “We were surprised to see, in the last General Assembly, attempts to overcome the conclusions of this Committee as regards the next steps to be taken,” though they were to no avail, he added.

It is not clear for many member states whether “the advantages of implementing harmonised procedures for design registration will compensate for the price paid, including adapting domestic regulations and also developing infrastructure and technology necessary to process industrial design applications in the harmonised way,” he said, reiterating the importance of continued work on the study. “Consideration must also be given to the economic impacts of the proposed treaty, especially in domestic design industries of developing countries.”

The Group B developed countries reiterated the urgent need for a treaty to serve all users, and the European Union concurred.

Korea said the treaty would simplify formalities, would make it easier, cheaper and quicker to register designs without the need of a sophisticated infrastructure.

The study should be discussed tomorrow, as well as a document prepared by the secretariat on provisions regarding technical assistance and capacity building in treaties administered by WIPO.

The African Group also submitted a proposal [pdf] expected to be examined tomorrow. The proposal consists of a list of articles to be included in the draft treaty, including special and differential treatment for developing and least-developed countries, and technical and financial assistance and capacity building.

Catherine Saez may be reached at info@ip-watch.ch.

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